1-800-Pack-Rat, LLC and Pack-Rat Portable Mini-Storage, LLC v. Salvatore Scafidi and PackRat Moving & Storage Inc.Claim Number: FA1008001343944
Complainant is 1-800-Pack-Rat, LLC and Pack-Rat Portable Mini-Storage, LLC (“Complainant”), represented by Andrew Friedman, of 1-800-Pack-Rat, LLC and Pack-Rat Portable Mini-Storage, LLC, Maryland, USA. Respondent is Salvatore Scafidi and PackRat Moving & Storage Inc. (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010.
On August 31, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names are registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@packratmovers.net, postmaster@moverspackrat.com and postmaster@ruapackrat.com by e-mail. Also on September 3, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names are confusingly similar to Complainant’s PACK RAT mark.
2. Respondent does not have any rights or legitimate interests in the <packratmovers.net>, <moverspackrat.com> or <ruapackrat.com> domain name.
3. Respondent registered and used the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, 1-800-Pack-Rat, LLC and Pack-Rat Portable Mini-Storage, LLC, owns the exclusive rights to the PACK RAT, PACK-RAT MINI-STORAGE, and 1-800-PACK-RAT marks which it uses in connection with its self-storage, moving, and warehousing services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office for its PACK RAT (e.g., 1,637,144 issued March 5, 1991), PACK-RAT MINI-STORAGE (e.g., 1641569 issued April 16, 1991), and 1-800-PACK-RAT marks (e.g., 3,615,497 issued May 5, 2009).
Respondent, Salvatore Scafidi and PackRat Moving & Storage Inc., registered the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names in March and April of 2010, all registered after Complainant’s marks. The disputed domain names resolve to websites which feature competing services to that of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the PACK RAT, PACK-RAT MINI-STORAGE, and 1-800-PACK-RAT marks. The Panel finds that registrations with a federal trademark authority are sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Complainant holds multiple trademark registrations with the USPTO for its PACK RAT (e.g., 1,637,144 issued March 5, 1991), PACK-RAT MINI-STORAGE (e.g., 1641569 issued April 16, 1991), and 1-800-PACK-RAT (e.g., 3,615,497 issued May 5, 2009) marks. Therefore, the Panel finds Complainant has established rights in the PACK RAT, PACK-RAT MINI-STORAGE, and 1-800-PACK-RAT marks pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names are confusingly similar to Complainant’s PACK RAT mark. The <packratmovers.net> and <moverspackrat.com> disputed domain names both contain Complainant’s entire PACK RAT mark, remove the space separating the two words, add the descriptive term “movers” and the generic top-level domain (“gTLD”) “.com” or “.net.” Respondent’s <ruapackrat.com> domain name incorporates Complainant’s entire mark absent the space between the terms and adds the letters “rua” and the gTLD “.com.” Previous panels have found that the addition of a descriptive term does not distinguish a disputed domain name from a complainant’s mark. Additionally, previous panels have concluded that the addition of a string of indiscriminate letters to a mark does not differentiate the disputed domain name. It has also been shown that the mere deletion of a space or the addition of a gTLD do nothing to differentiate a domain name from the mark in question because you cannot have a space in a domain name and a gTLD is required. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel concludes that Respondent’s <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names are confusingly similar to Complainant’s PACK RAT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Because Respondent has failed to respond to the complaint, the Panel may infer that Respondent does not have rights or legitimate interests in any of the <packratmovers.net>, <moverspackrat.com> or <ruapackrat.com> domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will nonetheless examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information identifies the domain name registrant as “Salvatore Scafidi and PackRat Moving & Storage Inc.” however; Respondent failed to respond to the complaint and hence, has not provided sufficient evidence to show that they were commonly known by domain name prior to registration. Complainant contends that Respondent is not authorized to use the PACK RAT mark. Although Respondent appears to be known by the disputed domain name as set forth in the WHOIS information, there is no other evidence given to imply that Respondent is commonly known by the disputed domain name. The Panel may assume Respondent has not established rights or legitimate interests pursuant to Policy 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). Therefore, the Panel finds that Respondent has not established rights or legitimate interests in any of the <packratmovers.net>, <moverspackrat.com> or <ruapackrat.com> domain names pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names to offer services that compete with Complainant. The Panel finds this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent uses the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names to disrupt Complainant’s business by offering moving services which directly compete with Complainant. The Panel finds such disruption to be in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
The disputed domain names all resolve to websites which offer moving and storage services. Respondent appears to operate this competing business by taking advantage of the confusion created by Internet users who attempt to reach Complainant’s site, but instead reach that of Respondent. The Panel finds that the creation of confusion in an attempt to commercially gain by Respondent constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <packratmovers.net>, <moverspackrat.com> and <ruapackrat.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: October 14, 2010
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